The Complainant is Lacoste Alligator S.A., Geneva, Switzerland, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is Monique Marcil, Queensbury, New York, United States of America (“USA”); Molou Hudong, Fuzhou, Fujian, People’s Republic of China (“China”). 2. The Domain Names and Registrar
The disputed domain names , , , , and are registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 20, 2012. On April 23, 2012, the Center transmitted by email to GoD, LLC. a request for registrar verification in connection with the disputed domain names. On April 23, 2012, GoD, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 26, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 16, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 21, 2012.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on June 8, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Panel notes that five of the disputed domain names, , , , and are registered to Monique Marcil, of Queensbury, New York, USA. The Panel notes that the remaining disputed domain name, , is registered to Molou Hudong, of Fuzhou, Fujian, China. The Complainant has requested that all six of the disputed domain names be included in a single UDRP action, pursuant to the Policy, the Rules and the Supplemental Rules.
The Complainant states that its reason for its request is that the Complainant believes that all of the WhoIs information for each of the disputed domain names is fictitious and that there is evidence that the websites associated with each of the disputed domain names indicates common ownership or control. The Complainant asserts that the said websites are similar in appearance and that the corresponding WhoIs records contain false information which follows a similar pattern. In particular, the Complainant notes that the email contact address associated with the disputed domain names registered to Ms. Marcil contains Mr. Molou’s name and that the “Contact Us” portion of the websites associated with the disputed domain names registered to Ms. Marcil lists Mr. Molou’s email address as the point of contact. The Panel also notes from the evidence provided by the Complainant that all of the disputed domain names share the same registrar and nameservers.
On this subject, paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) provides inter alia as follows:
“Can multiple complainants bring a single consolidated complaint against a respondent? Can a single consolidated complaint be brought against multiple respondents?
WIPO panels have articulated principles governing the question of whether a complaint filed with WIPO by multiple complainants may be brought against (one or more) respondents. These criteria encompass situations in which [...] in the case of complaints brought (whether or not filed by multiple complainants) against more than one respondent, where (i) the domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties.
In order for the filing of a single complaint [...] against multiple respondents which meets the above criteria to be accepted, such complaint would typically need to be accompanied by a request for consolidation which establishes that the relevant criteria have been met. The onus of establishing this falls on the filing party/parties, and where the relevant criteria have not been met, the complaint in its filed form would not be accepted.”
In the present case, the Panel is satisfied that the complaints against the two named registrants should be consolidated based upon the fact that the Complainant has demonstrated that the disputed domain names appear to be subject to common control. There is no evidence or submission before the Panel which indicates that such consolidation would not be fair and equitable to all parties. Accordingly, the Panel orders that the complaints against both registrants in respect of all of the disputed domain names listed by the Complainant be consolidated. Henceforth in this decision the Panel will for convenience refer to either or both of the Respondents as “the Respondent”. 4. Factual Background
The Complainant is a Swiss Societe Anonyme and is one of the world's leading companies in clothing and fashion accessory design and manufacture. The Complainant’s LACOSTE mark was introduced in 1933 when French tennis star René Lacoste collaborated with André Gillier, president of France’s largest knitwear manufacturer, to set up a company for the production of logo-embroidered shirts. The Complainant is still operated by the Lacoste family and today it trades from more than 1,100 boutiques worldwide, while its products are offered for sale through numerous additional retail outlets in 114 countries. In 2010 the Complainant’s global wholesale turnover was over €1.4 billion ($1.831 billion).
The Complainant has obtained numerous trademark registrations for the word mark LACOSTE around the world, including in China, where the actual Respondent for the disputed domain names appears to be located. For example, the Complainant is the owner of USA trademark registration no. 1947111 registered on January 9, 1996 in international class 14 and International trademark registered no. 606313 designated for China and registered on September 9, 2003 in international classes 35, 41 and 42; each for the word mark LACOSTE.
The disputed domain names, , , , and were each created on October 21, 2011 and each currently displays websites apparently of very similar construction which appear to offer the Complainant’s products for sale. The Complainant says however that the goods offered by the relative websites are not genuine products manufactured by the Complainant and are counterfeit. The disputed domain name was created on September 8, 2011 and the associated website currently displays a “500 server error”. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain names are confusingly similar to a trademark in which it owns rights; that the Respondent has no rights or legitimate interests in the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.
The Complainant provides extensive evidence of its trading history and goodwill in the name and mark LACOSTE including the fact that studies in 2003 and 2004 placed LACOSTE among France’s 25 most valuable brands and that a Time magazine article notes that the Lacoste polo shirt was the first time a logo was used on the outside of a shirt. The Complainant notes that the fame of the Complainant’s LACOSTE mark has been recognized in multiple prior UDRP proceedings. The Complainant states that as of the earliest of the creation dates of the disputed domain names, September 8, 2011, the Complainant had been using its LACOSTE marks for more than seventy-five years and had numerous trademark registrations in countries around the world, including China.
The Complainant submits that there has never been any relationship between the Complainant and the Respondent that would give rise to any licence, permission or authorization for the Respondent to use or register the disputed domain names. The Complainant asserts that the Respondent is not and has never been an authorized seller of any LACOSTE products. The Complainant submits that the evidence is overwhelming that the Respondent is using the disputed domain names in connection with a series of websites from which counterfeit LACOSTE products are being sold. The Complainant produces a sworn Declaration from one of its members of staff explaining the manner in which the disputed domain names , , , and are being used to sell counterfeit LACOSTE products together with considerable detail as to why the appearance of the various products suggests that they are counterfeit. The Complainant also notes that the Respondent’s websites at also includes listings for third party products such as UGG boots and RALPH LAUREN clothing. The Complainant submits that the use of the said disputed domain name to discuss and sell presumed counterfeit versions of products from the Complainant’s direct competitors is not a bona fide use of the disputed domain name.
The Complainant asserts that the disputed domain names are each confusingly similar to the Complainant's LACOSTE trademark as each incorporates the Complainant’s LACOSTE trademark in its entirety. The Complainant adds that the generic terms “sale,” “online,” “store,” “cheap,” “discount” and “outlet” do nothing to distinguish the disputed domain names from the Complainant’s trademark and that the geographic term “UK” does nothing to distinguish the relative disputed domain name, as the Complainant has sold its goods in the United Kingdom for decades. The Complainant notes that visitors to the websites associated with the disputed domain names are likely to be left with the false impression that the Respondent is authorized to sell the Complainant’s merchandise, and/or that the merchandise being sold by the Respondent is authentic and not counterfeit.
The Complainant submits that the Respondent cannot demonstrate or establish any legitimate interest in the disputed domain names which were registered long after the Complainant had established rights in its LACOSTE trademark through extensive use over the last 75 years. The Complainant adds that where a complainant’s mark is very well known and recognized, there generally is no legitimate use by the Respondent, referring in particular to Lacoste Alligator S.A. v. Domain Active Pty. Ltd.,WIPO Case No. D2005-0673.
The Complainant asserts that the Respondent’s use of the LACOSTE Marks in connection with counterfeit products cannot constitute a bona fide use of the mark under paragraph 4(c)(i) of the Policy. The Complainant submits that neither the disputed domain names themselves nor the associated websites disclose the lack of any relationship between the Complainant and the Respondent and that on the contrary, the Respondent repeatedly claims that it is a “Lacoste UK outlet store” or “a Lacoste Canada outlet store.” The Complainant argues that the said statements, combined with the repeated use of the Complainant’s trademark and the display of hundreds of the Complainant’s products throughout the websites associated with the disputed domain names combines to create a false impression of an affiliation with or endorsement by the Complainant, which, trading as it does on the fame of the Complainant’s trademarks, cannot support a finding of legitimate use.
The Complainant submits that the Respondent is also improperly commercially exploiting the disputed domain names and the Complainant’s LACOSTE trademark for commercial gain, in that the websites currently associated with the disputed domain names are online marketplaces at which the Respondent sells and offers for sale what the Complainant believes to be counterfeit LACOSTE-branded merchandise. The Complainant notes that the Respondent is offering the allegedly counterfeit merchandise at the website at significantly lower prices than the actual retail or wholesale price of genuine LACOSTE merchandise. The Complainant adds that the websites associated with the disputed domain names use unlawfully appropriated copyrighted photographs of LACOSTE products.
The Complainant asserts that the only reason that the Respondent could have sought to register and use the disputed domain names consisting of the LACOSTE mark plus the generic words “sale,” “online,” “store,” “cheap,” “discount” and “outlet” is that the Respondent knew of the Complainant’s trademark and wanted to trade on the Complainant’s renown to lure consumers to its site for the purpose of selling counterfeit LACOSTE merchandise, or otherwise profiting from consumer confusion. The Complainant submits that the Respondent’s unauthorized use of the Complainant’s copyrighted images at the websites associated with the disputed domain names increases the likelihood of confusion among unsuspecting visitors to the said websites. The Complainant states that the Respondent is exploiting the goodwill and fame of the Complainant’s trademark in bad faith in order to improperly benefit the Respondent financially and that these activities demonstrate bad faith registration and use of the disputed domain names in violation of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
Clearly none of the disputed domain names are identical to the Complainant’s LACOSTE trademark, however, are any of these confusingly similar? It is evident to the Panel that each disputed domain name incorporates the Complainant’s LACOSTE trademark in its entirety together with one or more generic words and punctuation, namely “cheap,” “outlet,” “discount,” “-online,” “-sale,” “-store,” and “UK”. The Panel is satisfied that the addition of these generic words, together in some cases with hyphens which act as word separators, does nothing to distinguish the disputed domain names from the Complainant’s trademark. Indeed, in each and every one of the disputed domain names, the focus, distinctive and dominant element of the disputed domain name is the Complainant’s trademark while the generic words merely act as descriptors relative to the LACOSTE trademark.
As such, and also disregarding the various top level domains in the disputed domain names for the purposes of comparison, as is customary in cases under the Policy, the Panel finds that the Complainant’s trademark is confusingly similar to the disputed domain names and thus that the first element under the Policy has been established. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a disputed domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with sufficient evidence of rights or legitimate interests to rebut that prima facie case.
In the present case, the Complainant asserts that there has never been any relationship between the Complainant and the Respondent that would give rise to any licence, permission or authorization for the Respondent to use or register the disputed domain names and that the websites associated with the disputed domain names create a false impression of an affiliation with or endorsement by the Complainant, which, trading as it does on the fame of the Complainant’s trademarks, cannot support a finding of legitimate use. The Panel is satisfied that this constitutes a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names and the burden of production thus shifts to the Respondent.
The Respondent has failed to file a response and as such has neither explained its conduct nor attempted to set out any rights or legitimate interests in the Domain Name. Furthermore, the Panel is faced with very detailed allegations by the Complainant that all but one of the disputed domain names are actively concerned in the sale of counterfeit products, many of which are designed to look like the Complainant’s LACOSTE branded goods and to which a representation of the Complainant’s various trademarks has been affixed without the Complainant’s authority. Clearly the use of these disputed domain names for that purpose cannot confer any rights or legitimate interests upon the Respondent, nor can it be described as a bona fide offering of goods or services.
The website associated with the remaining disputed domain name, , currently shows a server error. The Complainant has produced evidence linking this domain name to the other disputed domain names which suggests that the Panel should take a similar approach with all of the disputed domain names. In any event, the Panel has no reason to believe, nor is there any evidence before the Panel to show, that the Respondent might have any specific rights or legitimate interests in that particular disputed domain name.
In all of these circumstances, the Panel finds that the Complainant has proved that the Respondent has no rights or legitimate interests in the disputed domain names and that the second element under the Policy has been established. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.
On this topic, the essence of the Complainant’s case is that the Respondent is engaged in the sale of counterfeit imitations of the Complainant’s products and has registered and is using the disputed domain names, which each contain the Complainant’s LACOSTE mark, in furtherance of that activity. The Panel accepts the detailed evidence provided by the Complainant which has demonstrated to the Panel’s satisfaction that all but one of the disputed domain names is actively being used for this purpose. Accordingly it is clear to the Panel that, ipso facto, the Respondent must have had the Complainant’s trademark in mind when it registered the disputed domain names and furthermore that the Respondent’s use of the disputed domain names is not bona fide. The Panel is also satisfied that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of those websites, in violation of paragraph 4(b)(iv) of the Policy.
As noted above, the website associated with the disputed domain name currently shows a server error rather than one or other of the websites identified by the Complainant as selling counterfeit merchandise and with which the other disputed domain names are associated. It is nevertheless the Panel’s view that the server error is of no particular significance in the circumstances of this case given that there is clear evidence before the Panel that all of the disputed domain names including are linked to the same Respondent and are more likely than not to be part of the same scheme.
In all of these circumstances, the Panel finds that the Respondent has registered and is using the disputed domain names in bad faith and thus that the third element under the Policy has been established. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names , , , , and be transferred to the Complainant.
Andrew D. S. Lothian
Sole Panelist
Dated: June 21, 2012
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